IndyMac Bank, F.S.B. v. Jim Kato
Claim Number: FA0308000190366
PARTIES
Complainant
is IndyMac Bank, F.S.B., Pasadena,
CA (“Complainant”) represented by B.
Brett Heavner, of Finnegan Henderson Farabow Garrett &
Dunner LLP. Respondent is Jim Kato, Fountain Valley, CA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <loanwerks.com>,
registered with Intercosmos Media Group,
Inc. d/b/a Directnic.Com (hereafter “Directnic.Com”).
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 21, 2003; the Forum received a hard copy of the
Complaint on August 22, 2003.
On
August 22, 2003, Directnic.Com confirmed by e-mail to the Forum that the domain
name <loanwerks.com> is
registered with Directnic.Com and that the Respondent is the current registrant
of the name. Directnic.Com has verified that Respondent is bound by the Directnic.Com
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
August 25, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
15, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@loanwerks.com by e-mail.
A
timely Response was received on September 5, 2003, but was not in compliance
with UDRP Rule #5 and Forum Supplemental Rule #5. The Panel chooses to consider
Respondent’s non-compliant submission in this dispute.
Complainant’s
Additional Submission was received and determined to be in compliance with
Forum Supplemental Rule #7 on September 10, 2003.
On September 22, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
B.
Complainant
is one of the leading mortgage lenders in the United States with earnings of $143 million in 2002.
Complainant
offers multi-channel distribution of its mortgage products and services through
a nationwide network of mortgage brokers, mortgage bankers, and community
financial institutions, in addition to programs offered directly to consumers
through realtors and homebuilders.
Complainant
has used the LOANWORKS Marks for several years as the principal trademarks for
its mortgage origination services. In
April 2000, Complainant established a separate division called LoanWorks to identify
Complainant’s Business-to-Realtor services.
Under its LOANWORKS Marks, Complainant provides online mortgage
application services, mortgage loan advance approval letters, and customized
loan rates, fees and cost estimates.
Complainant showcases its LOANWORKS services at its website located at
the domain name <loanworks.com>.
Having
continuously identified Complainant’s services since 1997, and having been
promoted and advertised on Complainant’s website and other websites,
Complainant’s LOANWORKS Mark has become famous in the financial services
community, and enjoys favorable public acceptance and recognition.
Complainant
is owner of numerous trademark registrations, including U.S. Registration No.
2,238,058 for the mark LOANWORKS, filed February 19, 1997, issued April 13,
1999, covering services in mortgage lending and banking; and U.S. Registration
No’s. 2,238,162; 2,238,221; and 2,341,182, all for the mark LOANWORKS for
various financial services relating to mortgage lending and banking.
Complainant
owns the domain name <loanworks.com>, which was registered on April 2,
1997, and which has been used to identify Complainant’s website since on or
about that date.
HomeSafe
Mortgage was one of Complainant’s Broker Associates, and is owned by Respondent. A Broker Associate is a mortgage broker that
has been licensed by Complainant to use Complainant’s electronic mortgage
information transaction system to facilitate the processing of mortgage
applications with Complainant.
Complainant has never authorized Respondent to use the LOANWORKS Mark in
advertising or to register LOANWORKS-formative domain names. The Customer Agreement between Complainant
and Respondent specifically states that all intellectual property rights,
including trademarks, belong to and will remain with Complainant. Complainant signed the Customer Agreement on
January 26, 1999.
The
domain name <loanwerks.com> was registered in the year 1999 by
Respondent’s wife, after the Customer Agreement between Complainant and
Respondent, and was used for a website advertising the mortgage services of
HomeSafe Mortgage.
Complainant
sent several cease and desist letters to Respondent’s wife. Thereafter Respondent’s wife transferred the
domain name to Respondent on November 23, 2000.
Prior
to the transfer in 2000, in the year 1999, the domain name was no longer
connected to an active website and Respondent informed Complainant that he did
not intend to use the domain name.
Complainant offered to purchase the domain name for $500.
In
March 2003, Respondent offered the domain name for sale on the <loanwerks.com>
website. In May 2003, Respondent again began using the domain name for his
HomeSafe Mortgage website.
On
June 25, 2003, Complainant notified Respondent that his use of the domain name
continued to infringe on Complainant’s rights in the LOANWORKS Mark, and that
his use of the domain name violated the terms of the Customer Agreement with
Complainant.
Respondent
replied and offered to sell the domain name to Complainant for $2,500.
Complainant
terminated the Customer Agreement between the parties and thereafter Respondent
again offered the domain name for sale to the general public on the Internet.
The
domain name and trademark are confusingly similar.
Respondent
has no rights or legitimate interests in the domain name.
Respondent
registered and used the domain name in bad faith.
B.
Respondent
Respondent
contends that <loanwerks.com> is to be a financing arm for an
e-commerce website at <speedwerks.com>.
<(S)peedwerks.com> is under restructuring. The past and future website sells larger
ticket automotive after-market items and some items will require financing,
that is why we reserved the name <loanwerks.com>. Due
to <speedwerks.com> being completely overhauled and basically starting over,
Respondent is willing to negotiate a fair price for the domain name. Respondent’s counter offer of $2,500 was
very reasonable and not excessive.
C.
Additional Submissions
Complainant’s
Additional Submission contends that Respondent did not file the required
certification, which must be contained in all pleadings. Complainant further contends that none of
Respondent’s allegations are supported by any evidence and the claims are not
credible. Even if Respondent’s
allegations were true, that would give Respondent no right to use the domain
name to sell automotive products.
The
offer to sell the domain name for $2,500 is in excess of out of pocket expenses
and is evidence of bad faith.
Respondent was fully aware of Complainant’s LOANWORKS Mark before registration
of <loanwerks.com> and thereafter and is intentionally attempting
to attract Internet users to Respondent’s directly competing, commercial
website by creating a likelihood of confusion with Complainant and its
LOANWORKS Mark. This, plus offering the
domain name for sale on the Internet constitute textbook bad faith under the
UDRP.
FINDINGS
1. Complainant is a corporation engaged in
mortgage lending which has used the word, LOANWORKS as a mark since at least
February 19, 1997, at which time Complainant filed registrations with the
United States Patent and Trademark Office for the mark LOANWORKS. The trademark LOANWORKS was issued to
Complainant on April 13, 1999.
2. Respondent became a Broker Associate of
Complainant by written contract on January 26, 1999. The terms of the contract state that Respondent will not
reproduce or use Complainant’s Marks or any mark, word or design confusingly
similar to Complainant’s Marks in any manner other than as expressly authorized
by Complainant.
3. On a date not exactly shown in the
pleadings, but subsequent to January 26, 1999, Respondent’s wife registered the
domain name <loanwerks.com>.
4. Respondent began to use the domain name <loanwerks.com>
to promote his own business, HomeSafe Mortgage, on the Internet.
5. A series of cease and desist letters were
dispatched to both Respondent and his wife which resulted in other kinds of
communication between the parties regarding the domain name. Complainant
offered to purchase the domain name for the sum of $500 from Respondent and his
wife but the offer was refused.
6. On November 23, 2000, Respondent became
owner of the domain name <loanwerks.com>.
7. From the time of the cease and desist
letters until March of 2003, the domain name was not in use. In March 2003, Respondent offered the domain
name for sale on the Internet (“loanwerks.com is for sale Interested parties
should contact: jkato777@aol.com”).
8. In May 2003, Respondent began using the
domain name to refer Internet customers to Respondent’s HomeSafe Mortgage
website.
9. After a series of communications between
the parties wherein Complainant again protested the infringement of its
trademark, the Customer Agreement between the parties was terminated.
Respondent offered to sell the domain name to Complainant for $2,500. The offer
was refused. Respondent again offered the domain name for sale on the Internet
on or about August 14, 2003.
10. The domain name <loanwerks.com> is
confusingly similar to Complainant’s mark, LOANWORKS.
11. Respondent has no rights to or legitimate
interests in the domain name <loanwerks.com>.
12. The domain name <loanwerks.com> was
registered and used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Complainant is required to prove this
element. See Policy ¶ 4(a)(i).
The first showing to be made is that
Complainant has rights in the trademark under consideration. Complainant has done so in this case. Complainant’s continuous and widespread use
of the word LOANWORKS since 1997 and its registrations of the word with the
United States Patent and Trademark Office establish rights in the LOANWORKS
mark sufficient to satisfy this initial element.
Complainant also prevails on the issue of
the confusingly similarity between the domain name <loanwerks.com> and
Complainant’s mark, LOANWORKS.
The two are confusingly similar because
the disputed domain name merely replaces the letter “o” with the letter
“e”. Misspelling words and adding
letters to words does not create a distinct mark. See Sports Auth. Mich. Inc. v. villagewebsmith, FA 175291
(Nat. Arb. Forum Sept. 3, 2003) which held that sportsawthority and sports
authority are confusingly similar because of the replacement of “u” with
“w”. See also Hewlett-Packard Co. v.
Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) comparing
<hewlitpackard.com> to HEWLETT-PACKARD.
See Disney Enters., Inc. v. Zuccarini, D2001-0489 (WIPO June 19,
2001) to review a series of one letter misspellings and substitutions which
were found to cause the domain names and trademark to be confusingly similar.
Furthermore, <loanwerks.com> and
LOANWORKS are confusingly similar because they are phonetically similar. See
Hewlett-Packard Co. v. Cupcake City, FA93562 (Nat. Arb. Forum Apr. 7, 2000)
finding that a domain name which is phonetically identical to a trademark is
confusingly similar the trademark. See also VeriSign Inc. v. VereSign C.A., D2000-0303
(WIPO June 28, 2000).
Complainant prevails under Policy¶
4(a)(i).
Complainant bears the burden of proving
that Respondent has no rights or legitimate interests with respect to the
domain name. See Policy ¶(4)(ii).
Policy ¶ 4(c) instructs a Respondent on how to demonstrate rights to and
legitimate interests in the domain name in responding to a Complaint. Various Panels have interpreted the Policy
to state that once Complainant makes a proper showing, that the burden shifts
to Respondent to make a showing of Respondent’s rights to and legitimate interests
in the disputed domain name.
Reference to the Findings and to the
Contentions of Complainant, which were supported by letters, website printouts,
contracts signed by the parties, and other evidence, make a showing
satisfactory to the Panel that a prima facie case has been made to the
effect that Respondent has no rights to or legitimate interests in the domain
name in question.
Respondent’s Response was a simple e-mail
asserting that the domain name was to be used for financing automobile parts
and that the $2,500 sales price demanded by Respondent was fair and
reasonable. There are no supporting
documents, affidavits, or other evidence of any kind included in the Response
supporting the bare allegations of Respondent.
The first question to be decided is
whether to consider the Response at all.
The Response does not include the required certification as mandated by
Rule 5(b)(viii). Complainant contends
that the Response should not be considered and the case should be decided in a
default posture. See Talk City Inc. v. Robertson, D2000-0009 (WIPO Feb.
29, 2000) which concluded that no weight would be afforded to the facts alleged
in Respondent’s deficient submission, partly because it did not contain any
certification that the information contained in the e-mail was, to the best of
Respondent’s knowledge, complete and accurate in accordance with Rule 5
(b)(viii). See also Schott Glas v.
Necschott, D2001-0127 (WIPO March 14, 2001).
However, a Panel may choose to consider a
deficient Response in reaching the decision on the grounds that completely
rejecting a Response because of formal deficiencies is an extreme remedy not
consistent with the basic principles of due process. See Strum v. Nordic Net
Exch. AF, FA102843 (Nat. Arb. Forum Feb. 21, 2002).
It makes no difference to the outcome in
this proceeding whether the Response is considered or not considered. “Where a
complainant has asserted that the respondent has no rights or legitimate
interests in respect of the domain name, it is incumbent upon the respondent to
come forward with concrete evidence rebutting this assertion. This information is uniquely within the
knowledge and control of the respondent.
Failure of a respondent to come forward with such evidence is tantamount
to admitting the truth of complainant’s assertions in this regard.” “Concrete evidence constitutes more than
personal assertions.” See Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000).
Since Respondent has offered the barest
of personal assertions in this domain name dispute and no concrete evidence
that the assertions are true, Respondent cannot prevail.
Complainant prevails under Policy¶
4(a)(ii).
It is the responsibility of Complainant
to prove that the domain name has been registered and is being used in bad
faith. See Policy ¶ 4(a)(iii).
Complainant may prove this element in any of the ways set out in Policy
¶ 4(b), or by any other methods which illustrate Respondent’s bad faith
registration and use.
Complainant produced as an exhibit a
Customer Agreement between Complainant and Respondent, signed by both parties,
wherein Respondent became a “Broker Associate” of Complainant. The Customer Agreement gave Respondent a
right to use Complainant’s services in pursuit of mortgage business. The Customer Agreement quite clearly states
that Respondent was not authorized to use Complainant’s marks, or any other
terms or devices, which were confusingly similar to Complainant’s marks. Complainant was then operating under the mark,
LOANWORKS. Within a matter of months,
Respondent’s wife registered the domain name <loanwerks.com>. The domain name was thereafter used to
direct Internet customers to Respondent website for HomeSafe Mortgage, a
business Respondent owns.
Complainant contends that Respondent’s
registration of an infringing domain name, in contravention of an agreement
between the parties, and its subsequent use of the domain name without
authorization by Complainant evidences bad faith use and registration. Registration of a domain name in violation
of a license agreement between the Complainant and Respondent that states that
no use of the trademark is permissible without authorization is not only an
intentional breach of contract but is evidence of bad faith registration. See Heel Quik! Inc. v. Goldman, FA
92527 (Nat. Arb. Forum Mar. 1, 2000). See
also Associated Materials, Inc. v. Perma Well, Inc. FA 154121 (Nat. Arb.
Forum May 23, 2003) which decided that respondent’s actual knowledge of
Complainant’s rights in the ULTRAGUARD mark, inferred from the fact that
Respondent was a distributor of Complainant, along with Respondent being on
notice of its own lack or rights evidenced that the domain name was registered
and used in bad faith.
There is no question that Respondent was
fully aware of Complainant’s mark prior to the registration of the domain name,
<loanwerks.com>. There is
no doubt that Respondent was bound by the terms of the contract between himself
and Complainant which specifically prohibited the use and registration of a
confusingly similar domain name without authorization by Complainant. Notwithstanding such knowledge, Respondent
registered and used the domain name in intentional violation of the contract
between the parties. That is evidence
of bad faith registration and use sufficient to carry this element for
Complainant.
The Panel notes that Respondent’s wife
made the initial registration. However,
the domain name was thereafter used by Respondent on the Internet while
registered to the wife. The inference is made that the registration was made
with the knowledge of Respondent and for his benefit. The conclusion is reached that Respondent was a party to the
registration on principles of agency.
The evidence supports the finding that
the domain name was registered in bad faith.
Respondent’s use of the domain name to direct Internet users to his
website at HomeSafe Mortgage is bad faith use of the domain name.
The Panel does not consider the issues
regarding offers to sell the domain name by Respondent to Complainant or to the
general public, nor the offer made by Complainant to purchase the domain name
from Respondent. No evidence is
presented to support the conclusion that the domain name was registered
“primarily” for the purpose of selling or transferring the domain name. See Policy ¶ 4 (b)(i).
It is unnecessary to consider
Complainant’s argument that Respondent violated the bad faith provisions of
Policy ¶4 (b)(iv).
Complainant prevails under Policy ¶
4(a)(iii).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <loanwerks.com>
domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 6, 2003
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